A trademark is a distinctive word, phrase, logo, graphic symbol, or other device that is used to identify the source of a product or service and which serves to distinguish it from competitors. Some famous trademarks include Honda (for cars), Doritos (for chips), and McDonald’s (for fast food). Additionally, a trademark can be more than just a name or logo; trademark protection can be sought for distinctive shapes, smells, and colors. For example, the famous Burberry “check” pattern is a trademark. You obtain rights in your trademark simply from use. However, to obtain greater legal protection for your trademark, you should register it and then closely monitor for any unauthorized uses.

Steps

Part 1

Preparing to Register Your Trademark

1

Determine if your mark can be registered. A trademark may be registered if it is sufficiently distinctive. Distinctiveness is established in two ways: the mark is “inherently distinctive” or it has become distinctive through sufficient use.[1] Some marks, however, cannot be registered:

Offensive terms: if the trademark is seen as disparaging or offensive, it may not be trademarked. This is a growing, complicated body of law. If you have questions about whether your mark is offensive, then ask an attorney.

Trademarks not actually used: trademark rights are created through use. Accordingly, a mark that is never used in commerce will not be capable of registration.

Generic marks: a generic mark merely describes a class of goods or services. For example, “Window Cleaners” cannot serve as a mark, since the phrase is used by everyone to describe a service offered by many different companies.

Confusingly similar marks: a confusingly similar mark will create a likelihood of confusion in the mind of the consumer. You will have to search for possible similar marks before applying for registration.

Weak marks: last names, geographic marks, and descriptive marks. You would need to establish with evidence that consumers have come to associate the mark with your goods or services.

Functional features: a shape that is utilitarian cannot qualify. For example, the shape of a Hershey’s chocolate bar was denied registration as a trademark, because the recessed rectangular panels that make up the chocolate bar were deemed functional, i.e., they facilitated breaking up the candy bar.[2]

2

Search for similar marks. Although you have been using your trademark, you cannot register it if there is a similar mark already registered. Use the Trademark Electronic Search System (TESS) on the United States Patent and Trademark Office (USPTO) website to search for similar marks.[3]

Online searches of the Trademark Electronic Search System database are free. You will need to consult the Design Code Search Manual for the right code to search for if the mark includes a design element.

The main Trademark Public Search Library is in Alexandria, VA, and it is open weekdays, 8:00 a.m. to 5:30 p.m. Members of the public may use the library for free.

Some information may be searched at a regional Patent and Trademark Depository Library. These libraries have CD-ROM databases of registered and pending marks, but these databases lack design mark images.

Additionally, keep in mind that not all trademarks are located on the TESS system. You should also do a search of state trademarks (in the states where you plan to sell your product) and even foreign trademarks (if you plan to sell your product overseas). To see if your state registers trademarks, visit the USPTO’s link by clicking here.

3

Evaluate existing trademarks for possible conflicts. If an existing trademark looks similar to the one you're considering, use the Trademark Applications and Registrations Retrieval (TARR) database to check its status. You'll need to know the mark's serial or registration number to search TARR.

4

Revise the mark. If you find a mark that is similar to yours, you will need to revise yours to make it more distinctive. A “confusingly similar” mark will not be registered.[4]

A confusingly similar mark will create a likelihood of confusion among consumers. To determine whether your mark is confusingly similar, consider the similarity of the marks as well as the similarity of the goods or services offered.

Sound out the marks and check if they sound the same. Also show people the marks a couple of minutes apart and ask the person if they think the marks are the same.

Also consider whether the marks are used on similar products which are likely to be sold in the same store. Decide if you are competing for the same customers as the holder of the registered trademark.

5

Make the mark more distinctive. If possible, make the mark “inherently distinctive.” An inherently distinctive mark is one unique enough that it's unlikely to be thought up independently by another business owner. Marks that are inherently distinctive have the best chance of gaining trademark protection.[5]

The strongest marks are “fanciful and arbitrary.” These terms refer to marks that aren't real words, or that have an unexpected relationship to the product or business at hand, making it very unlikely that someone else would think up the same mark. For example, using the name "Vingra" for a clothing product or "Blueberry" for a chair company.

Suggestive marks are less strong. They suggest the essence of a product or company without overtly describing it, making them your second best bet. For example, having "Shiny Green" as the slogan for a company that sells ivy plants.

Descriptive marks are considered weak because they're intuitive and could easily be confused for someone else's trademark. For example, using a picture of an oatmeal cookie for a cookie company, or calling a video game company "Games Forever." Descriptive marks can become strong through use and advertising.

A generic mark cannot be trademarked. Generic words can be thought up and used by anyone to describe a product, so there's no way to enforce a protection. For example, using the name "Lip balm" for a lip balm company.

Part 2

Filing for Trademark Protection

1

Watch the videos on the Trademark Electronic Application System. The preferred method of preparing the federal trademark application is to use the online Trademark Electronic Application System (TEAS) located on the USPTO’s website here. The TEAS system guides the person requesting the mark.

The TEAS system has a series of self-help videos to help people filing for trademarks.

The USPTO recommends that everyone filing for a trademark watch the videos to familiarize themselves with the process.

Choose an application. There are three versions of the trademark application process on the TEAS System. They differ according to cost and level of complexity. To determine which application is right for you, click here.

TEAS Plus: This version of the TEAS application is completely online, and has the strictest requirements for filing. In order to file on the TEAS Plus system, you must submit a completed initial application and must agree to conduct all correspondence with the USPTO electronically. The fee is $225 per class you register for.

TEAS RF (reduced fee): This process allows for a moderately reduced application fee and requires that all correspondence be handled online. However, you do not need to file a completed initial application. The fee for filing an application on the TEAS RF system is $275 per class registered for.

TEAS regular: This process does not require any electronic communication, and does not require compliance with the stringent requirements of the TEAS Plus (and TEAS RF) applications. The fee for a TEAS regular application is $325 per class.

3

Identify the basis for the application. On the trademark application, you must state the “basis for your application.” There are four primary bases for first-time filers in the U.S.: (1) you have already used the mark in connection with the sale of goods in commerce, (2) you intend to use it in commerce, (3) you have applied for registration in a foreign market, or (4) you already own a foreign registration of the mark.[6] Of the 4, the first 2 are most common.

If you have already used the mark in connection with the sale of goods, you should check “yes” under “use in commerce.” You will be prompted to enter the date that you began to use the mark. Your best guess is okay here.

You also need to provide the USPTO the date on which you first sold your products outside of your state (for example, from a website).

If you have not yet used the mark but you plan to in the future, check “yes” under “intent to use.”

4

Identify the class of goods or services. You will need to identify the class of goods or services that you provide.[7]

The USPTO uses the International Schedule of Classes of Goods and Services to group related goods.

To identify what class of goods you have within the schedule, search the schedule online by clicking here.

The class number is indicated after the letter “G” for goods or “S” for services.

5

Provide a description of the goods or services. A description is not the same thing as the “class” of the goods. The description should be very precise. If it is too broad, the USPTO’s examining attorney will require you to go back and narrow it, delaying your application.

6

Identify the mark. Here, you must identify your proposed trademark. There are different ways to identify your trademark based on the type of mark.

Standard character mark: if the mark is a word or a group of words, simply list the words as you would like them to be trademarked. For example, a mark could be identified as “Becky’s Hair World.”

Stylized/Design format - special form mark: If the mark is some kind of symbol, a logo, or a design, the mark must be attached to the application as a JPEG file.

Sound mark: Although very rare, a “sound mark” is a trademark of a particular sound. To “identify” a sound mark, attach an MP3 of the sound to your application.

Note: You cannot combine the two distinct written formats — standard or stylized format — in the same trademark. A distinctive spelling of a company name and a logo with a distinctive rendering of that company name are two separate trademarks.

7

Provide information about the applicant. This would be the information of the person applying for the mark. For example, if you are applying for the mark yourself, you would be the applicant. For more information on what information you must provide, watch the video here.

You might also apply on behalf of your business (even if you are the only one involved with the business). If your business owns the mark, then you will list your official business name as the applicant.

Your citizenship is required, and you must also submit a mailing address.

Remember that the information submitted in your application is public, so if you do not want to use a personal mailing address for the application, you can use a post office box or the address for your business.

Additionally, if you are using either the TEAS Plus or the TEAS RF application, you must provide an email address where you can receive correspondence from the USPTO.

8

Provide a declaration. You are required to provide a “declaration,” or a sworn statement, that the facts within the trademark application are true. You should sign the declaration.

The TEAS application provides a declaration if you would prefer to use one that is prewritten.

9

Add any necessary disclaimers. Many trademarks contain words within the phrase that could not be trademarked alone. For example, a hair stylist could not trademark the words “hair salon” if that was all there was to the mark. If your mark contains any such words, you need to provide a “disclaimer” statement.[8]

This statement acknowledges that you are not attempting to trademark these general words, only the entire phrase when used together.

10

Provide a specimen. If your application is based on a mark already in use, you’ll need to include an example of how you actually use the mark.[9] This is known as a “specimen.”

If you have not used your mark yet, you will provide a specimen at a later date when you have begun using it.

To provide the specimen online, you will need to attach a digital photograph of the mark being used.

11

Complete the application. You will complete your application by paying the fees, signing the application electronically, and clicking “submit.”

You should receive an email confirmation after submitting.

Make sure that you save this confirmation for your records.

12

Await examination results. After filing, do not expect to hear anything about your application for around 3 months. Usually, the USPTO comes to a decision regarding your application within 3 to 6 months. Once your mark is approved, you will receive a notice.

Be sure to answer any questions. If the USPTO has any questions or needs any clarification regarding your application, they will contact you by sending an “action letter” explaining the problem or ambiguity in the application.[10]

If you receive an action letter, simply call the examiner who is listed on the letter to discuss what the problem is.

If you disagree with the examiner about the application, call the examiner before making the change to discuss it.

13

Await publication. Once your mark has been approved, you will receive a “notice of publication” in the mail. Your mark will be published for 30 days online in the Official Gazette.[11]

During these 30 days, anyone can oppose your filing of the trademark.[12] However, this happens very rarely.

14

Receive your “Certificate of Registration.” After 30 days, you will receive a certificate if there has been no opposition to your trademark.

However, because of the high volume that the USTPO deals with, it may take a year or more to process the application.[13]

Additionally, if you had not used your mark when you initially applied, your mark will not be placed on the trademark register until you file supporting documents (found on the USTPO website) stating when you began to use the mark and including a specimen.

Part 3

Protecting the Trademark

1

Identify your trademark when you use it. Once you have registered your trademark, you may use the registration symbol, which is an “R” within a circle.[14]

Before receiving registration, you may use the “TM” (trade mark) or “SM” (service mark) symbol.

2

Note any unauthorized use. If you see that a business or person has been using your trademark or one that looks similar to yours, then contact them and ask them to stop. Also document the dates and locations of the infringement. If someone uses your trademark on their product, keep a sample of the product.

To find marks that are similar to yours, you can perform simple internet searches of your mark or set up a google alert.

Pay particular attention to customers who purchase your product or service and who are confused between your product and someone else’s. If the confusion arises because of the similarity of the trademarks, then you can use this as evidence of infringement in a lawsuit.

3

Use the mark as an adjective. One way to keep your trademark active is to continually use it in your promotional materials. Frequently use the trademark as an adjective. For example, you might state: “One benefit of ALOHA brand cat food is that it is more nutritious than any competitor’s brand. ALOHA cat food is rich in…”[15]

However, be sure to avoid using your trademark as a noun, which encourages people to think of the trademark as a synonym for the product.[16] When this happens, the trademark often becomes generic. (For example, “Kleenex” being used as a synonym for a tissue.) When a mark becomes generic, you will no longer be able to protect it.

4

Register with a trademark “watch” service. To monitor unauthorized use of your trademark, you can hire a “watch service,” which will dig through various trademark registries to find copycats. These services typically cost a couple hundred dollars a year. Trademark watch services can do the following:[17]

search newly-filed and recently-approved trademark applications.

search domain name registrations.

track changes in ownership of registrations.

watch for unauthorized use on the Internet or on Internet auction sites.

keep track of new trademarks filed by competitors.

5

Maintain your rights. Trademark rights are maintained only through actual use. If you cease to use the mark, then you will lose your legal rights to it.

You must also periodically file an Affidavit of Continued Use or Excusable Non use, as well as an Application for Renewal.[18]

Part 4

Taking Legal Action

1

Meet with an attorney. You may have met with an attorney when you registered your mark. You may want to revive that relationship now. An attorney can help you effectively use the legal process to protect your mark.

You can find an experienced trademark attorney by using the referral service of your state or local bar association.[19] You can find your state’s referral service by visiting this website and clicking on your state.

If money is tight, seek out attorneys who work on a “flat fee” basis or on contingency. A flat fee is appropriate for simple tasks, like issuing cease and desist letter. Here, you pay a set amount for the task, no matter how long it ultimately takes the attorney.

An attorney may be willing to work on contingency if you file a lawsuit for infringement. In this situation, the attorney will not recover fees unless you win your lawsuit.

2

Challenge a trademark application. If someone is attempting to register a trademark that is potentially conflicting with your own, then you can challenge it. An advantage of hiring a trademark watch service is that you will be notified early enough so that you can bring a challenge.

You have 1 month from the date a trademark is published in the Official Gazette to file an opposition with the Trademark Trial and Appeal Board (TTAB).[20] If you miss this deadline, it becomes much harder to challenge the mark at a later date.

To initiate an opposition, you must file a Notice of Opposition with the TTAB. A sample notice can be found here.

3

Draft a cease and desist letter. If you spot someone infringing on your use, you should send a cease and desist letter. This letter informs someone that he is infringing on your trademark and demands that he stop immediately. The letter should be sent certified mail.

A cease and desist letter could be quite short but should cover the following: “It has been brought to our attention that your company is using the trademark “[insert mark]” in connection with the sale or marketing of your goods or services. Please be advised that this is a registered trademark of our business. Your unauthorized use of our registered mark amounts to an infringement, and we request that you immediately cease and desist your use of “[insert mark]” in connection with the sale or marketing of your goods or services. We understand you may not be aware of this conflict. Accordingly, we request that you respond by letter assuring us of your immediate action to cease and desist the use of this, or any substantially similar, trademark.”[21]

Keep all copies of cease and desist letters that you send as well as evidence that it was signed for.

4

Gather evidence. In addition to keeping copies of your cease and desist letter, you should gather any evidence you can that documents the infringement and notes any consumer confusion.

Write down the dates that the infringer continues to use the mark.

Keep records of reported confusion from customers or the media.

5

File a lawsuit. If the infringement does not stop, then you will have to bring a lawsuit in federal court. Your lawyer will draft a complaint, which will outline the infringement and identify the defendants.

If you are thinking of bringing a lawsuit to stop infringement, you should speak with your attorney immediately. Federal suits for trademark infringement must be brought within a certain amount of time. The deadline varies by state (since the federal law has no limitation period stated).[22] Meet with your attorney to discuss possible next steps.